Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Reginald Miller / Ricardo Humphrey / Domain Admin / Whoisprotection.cc / Ted Montana
Claim Number: FA2105001945389
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 Reginald Miller / Ricardo Humphrey / Domain Admin / Whoisprotection.cc / Ted Montana (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechersoutletdenmark.com>, <skechershrvatska.org>, <skechersoutletca.com>, <skechersvendita.com>, <skechersoutlethr.com>, <skecherstiendamx.com>, <olcsoskechers.com>, <skechersfrancesoldes.com>, <skechersschuhesale.com> and <skechersnzstore.com>, registered with Gransy, s.r.o.; 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and NETIM SARL.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2021; the Forum received payment on May 18, 2021.
On May 19, 2021; May 20, 2021; May 25, 2021, Gransy, s.r.o.; 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NETIM SARL confirmed by e-mail to the Forum that the domain names <skechersvendita.com>, <skechershrvatska.org>, <skechersoutletca.com>, ,<olcsoskechers.com>, <skechersoutlethr.com>, <skechersnzstore.com>, <skechersfrancesoldes.com>, <skechersoutletdenmark.com>, <skechersschuhesale.com> and <skecherstiendamx.com> are registered with Gransy, s.r.o.; 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NETIM SARL, and that Respondent is the current registrant of these domain names. Gransy, s.r.o.; 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NETIM SARL have verified that Respondent is bound by the Gransy, s.r.o.; 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NETIM SARL 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 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2021, by which Respondent could file a Response to the Complaint, via e-mail addressed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@skechershrvatska.org, postmaster@skechersoutletca.com, postmaster@skechersvendita.com, postmaster@olcsoskechers.com, postmaster@skechersoutlethr.com, postmaster@skechersfrancesoldes.com, postmaster@skecherstiendamx.com, postmaster@skechersnzstore.com, postmaster@skechersoutletdenmark.com, postmaster@skechersschuhesale.com. Also on June 1, 2021, 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 25, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
While UDRP Rule 3(a) provides that: “Any person or entity may initiate an administrative proceeding by submitting a complaint…,” 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.”
The Complaint filed in this proceeding identifies two separate Complainants: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. The Complaint asserts that Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc., and that Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II are in privity with one another, so that the two enterprises have joint standing to proceed here because they are all affiliated companies each with an interest in the subject matter of the Complaint. Respondent does not contest these assertions.
Supplemental Rule 1(e) has been interpreted to allow multiple parties to proceed as one where they can show a sufficient link to one another. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), a panel concluded:
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.
Similarly, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a particular mark.
On the undisputed facts before us, we conclude that a sufficient nexus has been shown to exist between the two complaining enterprises to permit them to be treated as a single Complainant for all purposes in this proceeding. Accordingly, the two complaining enterprises will be described throughout this decision as a single party, with the denomination Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the entities controlling the domain names at issue are the same person or entity, which is operating under several aliases. Complainant therefore requests that all identified domain name registrants be treated in this proceeding for all purposes as a single Respondent. In support of this request, Complainant asserts that:
1. all ten of the disputed domain names resolve to websites that contain the same layout;
2. all of them offer footwear bearing Complainant's SKECHERS trademark; and
3. the homepage of each resolving website displays the same four shoe styles for sale in different currencies.
Because the record shows that all of the contested domain names were registered within the same ten-month period, and because it appears from the facts asserted above, none of which Respondent denies, that they cannot be explained by reference to mere coincidence, the Panel determines that the request must be granted. Accordingly, this Decision will refer to the collective of identified respondents throughout as a single Respondent.
A. Complainant
Complainant is a global leader in the lifestyle and performance footwear industry.
Complainant holds a registration for the SKECHERS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,851,977, registered August 30, 1994, and renewed most recently as of February 14, 2014.
Respondent registered the following domain names on the date indicated below for each of them:
|
<skechersoutletca.com> |
June 6, 2020 |
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<skechershrvatska.org> |
September 9, 2020 |
|
<skechersvendita.com> |
September 9, 2020 |
|
<olcsoskechers.com> |
November 27, 2020 |
|
<skechersoutlethr.com> |
March 30, 2021 |
|
<skechersnzstore.com> |
April 16, 2021 |
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<skechersschuhesale.com> |
April 16, 2021 |
|
<skecherstiendamx.com> |
April 19, 2021 |
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<skechersoutletdenmark.com> |
April 21, 2021 |
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<skechersfrancesoldes.com> |
April 21, 2021 |
The domain names are confusingly similar to Complainant’s SKECHERS mark.
Respondent has not been commonly known by any of the domain names.
Respondent has not been authorized by Complainant to use Complainant’s SKECHERS mark.
Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent does not have any rights to or legitimate interests in the domain names.
Respondent knew of Complainant’s rights in the SKECHERS mark when it registered the domain names.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the SKECHERS trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights ….
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that all ten of Respondent’s domain names are confusingly similar to Complainant’s SKECHERS mark. Each of the domains incorporates the mark in its entirety, with only the addition of various generic terms and a generic Top Level Domain (“gTLD”), either “.com” or, in one instance, (“.org”).
The generic terms added by Respondent to Complainant’s mark in creating the domain names can be described as follows:
a. one domain contains the term “hrvatska" in Croatian, which translates to "Croatia" in English;
b. a second contains the term "outlet" and the country code "ca" for Canada;
c. a third includes "vendita" in Italian, which translates to "sale" in English;
d. another incorporates "olcso" in Hungarian, which translates to "cheap" in English;
e. still another contains the term "outlet" and the country code "hr" for Croatia;
f. yet another includes the country name France and “soldes” in French, which translates to "sales" in English;
g. the seventh incorporates the term “tienda” in Spanish, which translates to "store" in English, plus the country code “mx” for Mexico;
h. the eighth includes the country code "nz" for New Zealand and the generic term “store;”
i. the ninth contains the term “outlet” and the country name Denmark; and
j. the final domain name features the German term “schuhe,” which translates to "shoes" in English, plus the generic term “outlet.”
The domain names thus follow a pattern. Four use the word “outlet,” while two employ the term “sale(s)” and another two contain the word “store.” The final two incorporate the terms “cheap” and “shoes.” All of these terms can be taken to relate to some aspect of Complainant’s business. This pattern supports a finding of confusing similarity. See, for example, The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018):
[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).
On this point, see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Further to the point of patterns, it is noteworthy that seven of the domain names include either a country name, such as France, or a country code, such as NZ. These geographic references do not save the domain name from a finding of confusing similarity. See, for example, Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that the ‘usa’ portion of a domain name, a generic geographic term, would cause an Internet user to assume that the domain deals with the activities of a UDRP complainant in the USA and that it would lead to a website dealing with that subject, so that the domain name was confusingly similar to that complainant’s mark).
Finally, under this head of the Policy, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the challenged domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the disputed domain names, and that Complainant has not authorized Respondent to use the SKECHERS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Reginald Miller” or “Ricardo Humphrey” or “Domain Admin / Whoisprotection.cc” or “Ted Montana,” none of which resembles any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain names to facilitate, and profit from, the unauthorized sale of Complainant’s products. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that a respondent’s use of a disputed domain to sell products related to a UDRP complainant without its authorization did not amount to either 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 therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that, as is alleged in detail in the Complaint, Respondent employs the ten contested domain names to facilitate, and profit from, the unauthorized sale of Complainant’s products, by causing confusion among Internet users as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004):
Respondent [used Complainant’s mark in a domain name] to benefit from the goodwill associated with Complainant’s … marks and us[ed] the … domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the SKECHERS mark when it registered the ten confusingly similar domain names. This further illustrates Respondent’s bad faith in registering them. See, for example, Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015):
Respondent has actual knowledge of Complainant’s mark at the time of domain name registration [and therefore registered them in bad faith] based on the fame of Complainant’s … mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with [those of] Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <skechershrvatska.org>, <skechersoutletdenmark.com>, <skechersschuhesale.com>, <skechersoutletca.com>, <skechersvendita.com>, <olcsoskechers.com>, <skechersoutlethr.com>, <skechersfrancesoldes.com>, <skecherstiendamx.com> and <skechersnzstore.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 8, 2021
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