Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Mohammad Ali Silakhory Kardar / MASK-ONLINE.ir
Claim Number: FA1511001649807
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 Mohammad Ali Silakhory Kardar / MASK-ONLINE.ir (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersiran.com>, registered with Realtime Register B.V.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2015; the Forum received payment on November 24, 2015.
On November 26, 2015, Realtime Register B.V. confirmed by e-mail to the Forum that the <skechersiran.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified Respondent is bound by the Realtime Register B.V. 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 December 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2015 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@skechersiran.com. Also on December 1, 2015, 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 December 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
The trademark on which the complaint is based is the mark SKECHERS.
Complainant Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II owns numerous marks through registration with the United States Patent and Trademark Office including the trademarks SKECHERS (Reg. No. 1851977).
Complainant Skechers uses the trademarks primarily in connection with the goods footwear and apparel and related retail services.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a.] UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Complainant Skechers is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant Skechers' footwear products are sold in more than 120 countries and territories around the world. The trademark SKECHERS is the house mark of the company that appears on Skechers branded products. The SKECHERS house mark also appears on the face of Skechers' marketing and promotional materials. Complainant Skechers has also been publicly traded on the New York Stock Exchange under the symbol SKX since 1999.
Respondent's disputed <skechersiran.com> domain name is confusingly similar to Complainant Skechers' SKECHERS mark because the domain includes the SKECHERS mark in its entirety and adds the geographic modifier "iran" and the generic top-level domain (gTLD) ".com." The addition of these minor changes to Complainant Skechers' mark does not remove the disputed domain from the realm of confusing similarity.
The addition of a geographic identifier fails to distinguish Respondent's domain name and Complainant Skechers' trademark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name "is confusingly similar to the Complainant's trade mark 'AXA'" because "common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights"). In addition, adding a gTLD to a domain name is irrelevant to a UDRP Policy ¶4(a)(i) analysis of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that affixing a gTLD to a domain name is irrelevant to a UDRP Policy ¶4(a)(i) analysis). Therefore, the additional of the geographic modifier "iran" and the gTLD ".com" is insufficient to avoid confusing similarity.
[b.] UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in respect of the domain name <skechersiran.com>. Respondent is not commonly known by the disputed domain name. Respondent is not an authorized retailer or distributor of Skechers' products. Respondent is not authorized to use the name or the SKECHERS trademark. The WHOIS information lists "Mohammad Ali Silakhory Kardar" as the registrant and there is no other evidence in the record to suggest that the Respondent was commonly known by the <skechersiran.com> domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that Respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a/ Electromatic Equip't" as the registrant and no other evidence in the record suggests that Respondent was commonly known by the domain names in dispute).
Respondent's use of the <skechersiran.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Even though Respondent is not licensed or authorized to use the name or the SKECHERS trademark and is not an authorized retailer or distributor of Skechers' product, Respondent's website prominently displays the SKECHERS trademark along with photographs of Skechers products and claims to be official Skechers representatives. Respondent's website displays Skechers products using photographs taken directly from Complainant Skechers' official website <skechers.com>. As a result, unsuspecting consumers may be duped into believing that the products displayed on the website are genuine Skechers products.
[c.] UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent's use of the <skechersiran.com> domain name disrupts Complainant Skechers' business by diverting Internet customers seeking Complainant Skechers' website to Respondent's website.
Respondent registered the <skechersiran.com> domain name in bad faith and is using the domain name in bad faith. Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant Sketcher’s trademark. Respondent's website uses the Skechers house mark SKECHERS in connection with the false statement that Respondent is an official representative of Complainant Skechers. Furthermore, by using the <skechersiran.com> domain along with photographs of Skechers' products, Respondent is attempting to profit or is profiting by creating a likelihood of confusion with the Complainant Skechers' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through Respondent's website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the SKECHERS mark in connection with its business as a global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS marks based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., 1,851,977, registered August 30, 1994). Rights to a mark can be proven under Policy ¶4(a)(i) by a registration with a governmental trademark authority, such as the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Complainant has rights in the SKECHERS mark.
Complainant claims Respondent’s domain is confusingly similar to the SKECHERS mark. Respondent’s disputed <skechersiran.com> domain merely adds the geographic term “Iran” and the gTLD “.com.” Panels have routinely concluded the gTLD “.com” is not relevant when determining whether a domain is confusingly similar to a mark because all domain names require a TLD (whether a gTLD or a ccTLD). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Adding a geographic term to a mark in a domain name is not sufficient to distinguish the domain from the mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Respondent’s disputed domain is confusingly similar to the SKECHERS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized to use the SKECHERS mark in any manner. WHOIS information indicates Respondent registered the domain using the name “Mohammad Ali Silakhory Kardar” of the organization “MASK-ONLINE.ir” neither of which appear to resemble the disputed domain name. This appears to be an Iranian WHOIS privacy service. Under such circumstances, Respondent has no beneficial ownership interest in the disputed domain name. Panels have held, and this Panel does hold, that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary in the record. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant claims Respondent’s use of the disputed domain name to offer goods for sale using Complainant’s mark without Complainant’s permission is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <skechersiran.com> domain resolves to a website that displays various pictures of shoes, presumably for sale, and displays the text, “Wellcome to Skechers Official Site Iran.” [sic]. First of all, Respondent is not affiliated with Complainant in any way, so Respondent’s web site cannot be Complainant’s “official web site” in Iran. The photos on Respondent’s web site were copied from Complainant’s web site (also without permission). This Panel is willing to infer from this record that Respondent is not selling genuine goods. The goods are being passed off as genuine. Respondent’s use does not fall within the parameters of Policy ¶4(c)(i) or ¶4(c)(iii).
There would be no bad faith if Respondent was selling genuine good on the resolving web site (and only genuine goods). That does not seem to be the facts of this case.
Finally, Respondent acquired no rights because it registered to the domain name using a privacy service. The disclosed registrant has no interest in the domain name. The underlying beneficial owner’s identity is not disclosed. Respondent has done nothing to publicly associate itself with the domain name. Therefore, Respondent has acquired no rights.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the confusing similarity between the SKECHERS mark and the disputed domain name to confuse and attract internet users for commercial gain. The disputed domain resolves to a website stating “Wellcome to Skechers Official Site Iran” [sic] and appearing to sell counterfeit goods (certainly Complainant has no record of selling goods to Respondent and claims the goods do not come from Complainant). It appears these goods are counterfeit. Respondent has demonstrated bad faith through using the SKECHERS mark in an attempt to attract internet users in an effort to sell counterfeit Complainant’s goods.
Respondent registered the disputed domain name using a privacy service. In a commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. This alone is sufficient grounds upon which to find bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <skechersiran.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 4, 2016
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