Skechers U.S.A. Inc. v. none none et al.
Claim Number: FA1812001822337
Complainant: Skechers U.S.A. Inc. of Manhattan Beach, California, United States of America.
Complainant Representative:
Complainant Representative: Kleinberg & Lerner, LLP of Los Angeles, California, United States of America.
Respondent: none none of none, International, CN.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registry: NeuStar
Registrar: Dynadot, 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 Examiner in this proceeding.
Douglas M. Isenberg, as Examiner.
Complainant submitted: December 21, 2018
Commencement: December 26, 2018
Default Date: January 10, 2019
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under usRS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the .usTLD Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
In its Complaint, Complainant states the following:
“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 over 170 countries and territories around the world.
“The SKECHERS trademark has been registered in numerous jurisdictions worldwide including in the U.S. (Reg. No. 1851977) in International Class 25 for footwear. In addition, the SKECHERS trademark is duly registered with the Trademark Clearing House.
“Respondent obtained registration of the domain skechersshoe.us. Respondent's domain registration includes, and is identical to, the SKECHERS trademark together with the generic term "shoe" in reference to Complainant's core product, and the top-level domain .us. By registering in the .us ccTLD, Respondent creates an illusion that the website is trustworthy. Respondent has no legitimate rights or interests in the trademark SKECHERS. Respondent is not licensed or authorized by Skechers to use the SKECHERS trademark.
“Respondent obtained registration of the skechersshoe.us domain in bad faith. The domain name skechersshoe.us currently resolves to a page using a copyrighted image from the Complainant's promotional campaign with the renowned performer Camila Cabello, listing for sale counterfeit SKECHERS branded footwear. Respondent registered the domain name, appropriating Complainant's famous SKECHERS trademark in order to suggest to Internet users that there is a connection between Complainant and the Respondent's domain. Respondent's registered domain name intentionally attracts Internet users to Registrant's website and disrupts Complainant's business by selling counterfeit products.
“As the SKECHERS trademark has been submitted to and verified by Trademark Clearing House, Respondent must have received a warning from Trademark Clearing House indicating that the SKECHERS trademark belongs to the Complainant. Despite this warning, Respondent chose to continue with the registration of skechersshoe.us in violation of Complainant's rights. Complainant contends that Respondent's registration of a domain name that is identical to Complainant's registered trademark creates a likelihood of confusion with Skechers' SKECHERS house mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.”
Complainant has provided the following exhibits with its Complaint: (1) a printout from Complainant’s website using the domain name <skechers.com>, which contains a graphic page header for “Camila Cabello”; (2) a printout from Respondent’s website using the domain name <skechersshoe.us>, which contains the same graphic page header for “Camila Cabello” as contained on Complainant’s website; and (3) a copy of a certificate of registration from the U.S. Patent and Trademark Office for U.S. Reg. No. 1,851,977 for the mark SKECHERS owned by Complainant, registered on August 30, 1994, for use in connection with, inter alia, footwear.
Registrant did not file a Response. Even though the Registrant has defaulted, usRS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the three required elements to obtain an order that a domain name should be suspended.
Paragraph 1.2.6.1 of the usRS requires that a Complainant prove “that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the usRS complaint is filed.” Based on Complainant’s submissions, it is apparent that Complainant holds a valid national registration for the SKECHERS trademark. Further, the Examiner finds that the disputed domain name is confusingly similar to this trademark because it contains the trademark in its entirety, and the addition of the word “shoe” (which is associated with the trademark) does nothing to eliminate any confusing similarity.
Paragraph 1.2.6.2 of the usRS requires that a Complainant prove “that the Registrant has no legitimate right or interest to the domain name.” Based on the Complainant’s submissions, which have not been disputed by Registrant, the Examiner finds that Registrant has no legitimate right or interest to the disputed domain name.
Paragraph 1.2.6.3 of the usRS requires that a Complainant prove “that the domain was registered or is being used in bad faith.” Paragraph 1.2.6.3(d) of the usRS states that the following is one way by which a Complainant can demonstrate bad faith: “By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.” Here, by allegedly “using a copyrighted image from the Complainant's promotional campaign with the renowned performer Camila Cabello, listing for sale counterfeit SKECHERS branded footwear” (an allegation that Registrant has not disputed), Registrant has acted in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the usRS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration: <skechersshoe.us>
Douglas M. Isenberg, Examiner
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