SKECHERS U.S.A., Inc. and SKECHERS U.S.A., Inc. II v. marlene nelson
Claim Number: FA1809001804968
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 marlene nelson (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersoutlets.us>, registered with NameCheap, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 6, 2018; the Forum received payment on September 6, 2018.
On September 10, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <skechersoutlets.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2018 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@skechersoutlets.us. Also on September 10, 2018, 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 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 usTLD 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 usTLD Policy, usTLD 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.
A. Complainant
Complainant, Skechers U.S.A., Inc., is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant’s footwear products are sold in more than one hundred and seventy (170) countries and territories around the world. Complainant has rights in the SKECHERS mark based upon 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). Respondent’s <skechersoutlets.us> is confusingly similar to Complainant’s mark because it wholly includes the SKECHERS mark, adds the generic term “outlets”, and incorporates a “.us” country code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <skechersoutlets.us> domain name. Respondent is not authorized to use Complainants SKECHERS mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant to sell Complainant’s products without authorization.
Respondent registered and uses the <skechersoutlets.us> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract, for commercial gain, users to the disputed domain name’s resolving website where Respondent attempts to pass off as Complainant to sell unauthorized products. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the SKECHERS mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, of Manhattan Beach, CA, USA. Complaint is the owner of domestic and international registrations for the mark SKECHERS, which it has continuously used since at least 1994, in connection with its provision of goods in the performance footwear and lifestyle apparel industry.
Respondent is Marlene Nelson, of Lauderhill, FL, USA. Respondent’s registrar’s address is listed as Phoenix, AZ. The Panel notes that the <skechersoutlets.us> domain name was created on or about April 26, 2017.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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 claims to have rights in the SKECHERS mark based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under 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.”). Here, Complainant provides a copy of its USPTO registration for the SKECHERS mark 1,851,977, registered Aug. 30, 1994). The Panel here finds that Complainant has sufficiently demonstrated its rights in the SKECHERS mark per Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <skechersoutlets.us> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the SKECHERS mark while adding a generic term and a ccTLD. Adding a descriptive term and a ccTLD to a complainant’s mark may not sufficiently mitigate any confusing similarity between the disputed domain name from the mark under 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)); see also Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (“The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”). Here, Respondent wholly incorporates Complainant’s SKECHERS mark while adding the generic term “outlets” and the “.us” ccTLD. The Panel here finds that Respondent’s <skechersoutlets.us> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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). Complainant here has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <skechersoutlets.us> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the SKECHERS mark. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(iii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may support a finding 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 of record identifies Respondent as “Marlene Nelson.” Furthermore, no information of record indicates that Respondent was authorized to use Complainant’s SKECHERS mark. The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(iii).
Complainant additionally alleges Respondent fails to use <skechersoutlets.us> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain name to pass off as Complainant to sell Complainant’s products without authorization. Use of a disputed domain name to pass off as a complainant to sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶¶ 4(c)(ii) or (iv). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides screenshots of the disputed domain name’s resolving website, which prominently displays Complainant’s SKECHERS mark and purports to sell Complainant’s products. The Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant claims that respondent registered and uses the <skechersoutlets.us> domain in bad faith. Specifically, Complainant contends Respondent uses the disputed domain name to pass off as Complainant to sell Complainant’s products without authorization. Use of a disputed domain name to pass off as a complainant to sell unauthorized products may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). The Panel again notes that Complainant provides screenshots of the disputed domain name’s resolving website. Complainant again highlights that the disputed domain name’s resolving website prominently displays Complainant’s SKECHERS mark and purports to sell unauthorized versions of Complainant’s products. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant claims that due to Respondent’s use of the mark at the disputed domain name website, to pass off as Complainant in order sell Complainant’s products without authorization, Respondent had actual knowledge of the SKECHERS mark. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersoutlets.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Oct. 16, 2018
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