Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Leah Gaertner
Claim Number: FA1909001864075
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 Leah Gaertner (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skecherswebaruhaz.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2019; the Forum received payment on September 25, 2019.
On September 26, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <skecherswebaruhaz.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 September 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@skecherswebaruhaz.com. Also on September 27, 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 October 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
There are two Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainant argues Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and both are in privity with each other. See Compl. Annex 2.
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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and it will treat them all as a single entity in this proceeding. The proceeding may therefore go forward in that form. Accordingly, in this decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant made the following contentions.
Complainant has been in the footwear and apparel and related retail service industry since 1993. Complainant has rights in the SKECHERS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). See Compl. Annex 3. Respondent’s <skecherswebaruhaz.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the SKECHERS mark in its entirety, adding the Hungarian generic term “webaruhaz” which translates into “web shop” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <skecherswebaruhaz.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent prominently displays the SKECHERS mark along with suspected counterfeit versions of Complainant’s products offered for sale.
Respondent registered and uses the <skecherswebaruhaz.com> domain name in bad faith. Respondent’s <skecherswebaruhaz.com> domain name contains an exact reproduction of the well-known SKECHERS mark to capitalize on consumer recognition of the SKECHERS mark. Additionally, based on the longstanding use of the SKECHERS mark and Respondent’s reproduction of the SKECHERS mark in the gTLD, Respondent must have had actual and constructive knowledge of Complainant’s rights in the mark at the time of registration of the disputed domain name. 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.
1. Complainant is a United States company that has been engaged in the footwear and apparel and related retail service industries since 1993.
2. Complainant has established its trademark rights in the SKECHERS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994).
3. Respondent registered the <skecherswebaruhaz.com> domain name on July 23, 2019.
4. Respondent prominently displays on its website the SKECHERS mark along with suspected counterfeit versions of Complainant’s products offered for sale. There is no evidence showing that Respondent has a right or legitimate interest in the disputed domain name.
5. The evidence shows the Respondent registered and used the disputed 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SKECHERS mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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.”). Complainant provides copies of its registration of the SKECHERS mark with the USPTO (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). See Compl. Annex 3. Accordingly, the Panel finds that Complainant has established rights in the SKECHERS mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SKECHERS mark. Complainant argues that Respondent’s <skecherswebaruhaz.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the SKECHERS mark in its entirety, adding the Hungarian generic term “webaruhaz” which translates into “web shop” and the generic top-level domain (“gTLD”) “.com.” The addition of a generic term and a gTLD fails to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the disputed domain name is confusingly similar to the SKECHERS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SKECHERS trademark and to use it in its domain name, which incorporates the mark in its entirety, along with the Hungarian generic term “webaruhaz” which translates into “web shop” and which does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <skecherswebaruhaz.com> domain name on July 23, 2019;
(c) Respondent prominently displays on its website the SKECHERS mark along with suspected counterfeit versions of Complainant’s products offered for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <skecherswebaruhaz.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s 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)”). The WHOIS information for the disputed domain name lists the registrant as “Leah Gaertner” and there is no other evidence to suggest that Respondent was authorized to use the SKECHERS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent fails to use the <skecherswebaruhaz.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent prominently displays the SKECHERS mark along with suspected counterfeit versions of Complainant’s products offered for sale. Passing off by a respondent as a complainant by displaying a complainant’s mark and selling counterfeit or competing goods may not be a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the resolving webpage of the disputed domain name which purportedly displays the SKECHERS mark and offers for sale suspected counterfeit versions of Complainant’s products. See Compl. Annex 7. The Panel therefore finds Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent registered the <skecherswebaruhaz.com> domain name containing an exact reproduction of Complainant’s well-known mark to capitalize on the consumer recognition of the SKECHERS mark. A domain name obviously connected to a complainant’s mark, thus creating a likelihood of confusion for commercial gain, can evince bad faith registration and use under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that Respondent attempts to capitalize on consumer confusion by incorporating the exact SKECHERS mark into the gTLD. As the Panel agrees, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that based on the longstanding use of the SKECHERS mark and Respondent’s reproduction of the SKECHERS mark in the gTLD, Respondent must have had actual and constructive knowledge of Complainant’s rights in the mark at the time of registration of the <skecherswebaruhaz.com> domain name. 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.”). 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).”). Complainant argues that the fact that Respondent registered an exact reproduction of Complainant’s SKECHERS mark in the website to which the domain name resolves indicates that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark at the time of registration of the disputed domain name. As the Panel agrees, the Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SKECHERS mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skecherswebaruhaz.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 21, 2019
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