Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Linxia Song
Claim Number: FA1705001732583
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II
(“Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, USA. Respondent is Linxia Song (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers-store.net>, (‘the Domain Name’) registered with Domain.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 21, 2017; the Forum received payment on May 21, 2017.
On May 22, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <skechers-store.net> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, 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 May 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2017 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@skechers-store.net. Also on May 25, 2017, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant owns numerous trade marks for SKECHERS registered in the USA for footwear, apparel and related services.
The Domain Name is confusingly similar to Complainant’s SKECHERS mark, consisting of the SKECHERS mark in its entirety, merely adding the modifier ‘-store’ and the gTLD .net, which do not remove the Domain Name from the realms of confusing similarity.
Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known by the Domain Name. Respondent is not authorized to use the SKECHERS trade mark. Respondent is not making a bona fide offering of goods and services or a legitimate non commercial or fair use. Respondent’s web site prominently displays the SKECHERS trade mark along with photographs of counterfeit SKECHERS products which compete with Complainant’s genuine products.
Complainant’s SKECHERS trade mark was registered in 1994 well before Respondent registered the Domain Name. The use of ‘-store’ in the Domain Name and the use in relation to footwear shows it is likely that Respondent is familiar with Complainant and its business. Another indication of bad faith is that Respondent has given a false address on the WhoIS for the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous trade marks for SKECHERS registered, inter alia, in the USA for, footwear, apparel and related services with first use in commerce recorded as 1993.
The Domain Name registered in 2016 has been used to offer counterfeit ‘SKECHERS’ products in competition with Complainant.
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 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 (Forum July 31, 2000) (holding that 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.”).
Identical and/or Confusingly Similar
Complainant is a provider of footwear, apparel and related services and is the owner of the SKECHERS trademark, inter alia, in the United States with first use in commerce recorded as 1993.
The Domain Name consists of a name identical to Complainant's registered mark SKECHERS plus a hyphen and the generic word ‘store’. The addition of this hyphen and generic word does not serve to distinguish the Domain Name from Complainant's SKECHERS mark. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July 1, 20113)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to 4 (a)(i)) see also Morgan Stanley v Eugene Sikorsky/private person, FA 1651901 (Forum Jan 19, 2016)(concluding that the addition of a generic term and top level domain to a trade mark is inconsequential under a Policy 4 (a)(i) analysis)
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote goods in competition with those of Complainant. It is clear from the content of the site that Respondent was aware of the significance of the name "SKECHERS" at the time of registration as the site attached to the Domain Name uses Complainant’s mark in its logo form. The usage is not fair as the site uses Complainant’s logo and does not make it clear that there is no commercial connection with Complainant and offers counterfeit versions of Complainant’s products. This use is clearly deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. See Wolverine World Wide Inc. v Fergus Knox, FA 1627751 (Forum Aug 19, 2015)(finding no bona fide offering of goods or legitimate non commercial or fair use existed where Respondent used the resolving web site to sell suspected counterfeit products). Respondent has not answered this Complaint and such conduct cannot be legitimate. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant alleges that Respondent's use of the site is commercial and he is using it to make a profit from products which compete with Complainant in a deceptive manner. The content of Respondent’s web site offering counterfeit versions of Complainant’s products makes it clear that it was aware of Complainant’s rights at the time of registration. The use of Complainant’s logo would cause people to associate the website at the Domain Name and the products on it with Complainant and its business and goods and cause them to believe the site is authorised and offers genuine goods.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and the products featured on it under Policy 4 (b)(iv). See H-D Michigan, LLC v Ross, FA 1250712 (Forum Apr 23, 2009)(determining that Respondent’s selling of counterfeit products created the likelihood of confusion as to Complainant’s affiliation with the disputed domain name and allows Respondent to profit from that confusion).
This usage is also disruptive. See Xiaomi Inc v Tanapong Kotipan/Omega Gadget, FA1505001621199 (ForumJuly 10, 2015)(Use of a domain name to offer counterfeit goods is bad faith under Policy 4 (b)(iii).)
It is also noted that a false address has been given in the WhoIs information. See CNU ONLINE Holdings, LLC v Domain Admin/Whois Privacy Corp, FA 1504001614972 (Forum May 29, 2015)(‘as the Panel sees that respondent has provided false or misleading WhoIS information, the panel finds bad faith in respondent’s registration of the disputed domain name’).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Policy 4 (b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers-store.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 21, 2017
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