Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA2003001888479
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 Domain Administrator / See PrivacyGuardian.org (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersakcio.com>, registered with NameSilo, 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 Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2020; the Forum received payment on March 16, 2020.
On March 17, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersakcio.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2020 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@skechersakcio.com. Also on March 17, 2020, 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 April 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 be transferred from Respondent to Complainant.
There are two Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Skechers U.S.A., Inc. II is a wholly-owned subsidiary of Skechers U.S.A., Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The 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 Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) “(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.” The record indicates that the two complaining parties have a sufficient link to one another such that the Panel concludes they may be considered as a single entity in this proceeding. Therefore, throughout this Decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
1. Complainant is a global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994)
2. Respondent’s <skechersakcio.com>[i] domain name is confusingly similar to Complainant’s SKECHERS mark as Respondent merely adds the Hungarian generic term “akcio” which translates to “action” in English and the “.com” generic top-level domain (“gTLD”) to the mark.
3. Respondent does not have rights or legitimate interests in the <skechersakcio.com> domain name. Respondent is not authorized or licensed to use Complainant’s SKECHERS mark and is not commonly known by the domain name.
4. Respondent does not use the domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <skechersakcio.com> domain name to sell Complainant’s counterfeit products.
5. Respondent has registered and uses the <skechersakcio.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the domain name.
6. Finally, Respondent must have had actual knowledge of Complainant’s SKECHERS mark prior to registering the <skechersakcio.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKECHERS mark. Respondent’s domain name is confusingly similar to Complainant’s SKECHERS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skechersakcio.com> domain name and that Respondent registered and uses the domain name 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:
(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a list and copies of its USPTO registrations for the SKECHERS mark (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994).
Complainant next claims that Respondent’s <skechersakcio.com> domain name is confusingly similar to Complainant’s SKECHERS mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic term and a gTLD to a complainant’s mark do not negate any confusing similarity between a domain name and mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent merely adds the Hungarian generic term “akcio” which translates to “action” in English, and a “.com” gTLD to Complainant’s SKECHERS mark. The Panel agrees with Complainant and finds that the <skechersakcio.com> domain name does not contain changes that would sufficiently distinguish it from the SKECHERS mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <skechersakcio.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <skechersakcio.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the SKECHERS mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Domain Administrator / See PrivacyGuardian.org,” and there is no other evidence to suggest Respondent was authorized to use the SKECHERS mark. The Panel therefore finds Respondent is not commonly known by the <skechersakcio.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use. Specifically, Complainant argues Respondent uses the <skechersakcio.com> domain name to sell counterfeit products. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <skechersakcio.com> domain name under Policy ¶¶ 4(c)(i) & (iii) by selling counterfeit products carrying the Complainant’s label. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Respondent's website prominently displays the SKECHERS trademark along with photographs of Complainant’s footwear and related products. This use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <skechersakcio.com> domain name in bad faith by disrupting Complainant’s business and diverting users to the resolving website of the domain name which sells counterfeit products. Using a domain name which incorporates the mark of another to divert Internet users to the resolving website which sells counterfeit goods shows bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products.) The evidence shows that Respondent is using Complainant’s SKECHERS mark on its webpage to sell counterfeit products. The Panel agrees with Complainant that by using the <skechersakcio.com> domain name along with photographs of Complainant’s counterfeit products, Respondent attempts to profit by creating a likelihood of confusion with the Complainant Skechers' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website, as well as the products offered through the resolving website. Therefore, Respondent has engaged in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent registered the <skechersakcio.com> domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark is sufficient. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant asserts, given the global reach of the Internet, the fact that Respondent's website displays the SKECHERS mark alongside counterfeit footwear products, Respondent must have been aware of Complainant and its SKECHERS prior to registering the <skechersakcio.com> domain name. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark prior to registering the <skechersakcio.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersakcio.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 13, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page