URS DEFAULT DETERMINATION

Skechers U.S.A., Inc. II v. Contact Privacy Inc. Customer 1242639326
Claim Number: FA1805001787216

DOMAIN NAME

<skechers.app>

PARTIES

	Complainant: Skechers U.S.A., Inc. II of Manhattan Beach, CA, United States of America
	Complainant Representative: Kleinberg & Lerner, LLP Marshall A Lerner of Los Angeles, CA, United States of America

	Respondent: Contact Privacy Inc. Customer 1242639326 Contact Privacy Inc. Customer 1242639326 of ON, CA

REGISTRIES and REGISTRARS

	Registries: Charleston Road Registry Inc.
	Registrars: Google Inc.

EXAMINER

	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 Examiner in this proceeding.
	Ms. Kateryna Oliinyk, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: May 17, 2018
	Commencement: May 21, 2018
	Default Date: June 5, 2018
	Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

Findings of Fact: The Complainant's contentions are straightforward. In summary the Complainant makes the following points. The Disputed Domain Name is identical to the well-known SKECHERS Trademark. The Complainant says the Respondent has no rights or legitimate interests in the term "SKECHERS". The Complainant contends that the term has no other meaning other than in relation to itself and its services and is a badge of origin in that respect. In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the passive holding of a domain name which has no other meaning other than in relation to the Complainant constitutes bad faith in this regard. The Complainant's Trademark is well-known and is submitted to and verified by Trademark Clearing House and the Respondent ought to have known of the Complainant and its use of the term "SKECHERS".

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are 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 URS complaint is filed.

Determined: Finding for Complainant

The SKECHERS trademark has been registered in numerous jurisdictions worldwide including in the U.S. (Reg. No. 1851977). In addition, the SKECHERS trademark is duly registered with the Trademark Clearing House, and its use has been verified . The Complainant has a significant reputation and has a vast amount of goodwill in the SKECHERS name. The registered domain name <skechers.app> fully incorporates the word mark SKECHERS for which the Complainant holds valid registrations in different jurisdictions and that are in current use, the status and confirmation of use in which are supported by relevant entries with the Clearinghouse. It is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus new gTLDs .app does not preclude confusion of the conflicting domain with the Complainant’s marks. Respectively, the Examiner finds that the contested domain name is confusingly similar with the Complainant’s word marks under URS 1.2.6.1. (i).

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

he Examiner determines that the Respondent is not commonly known by the SKECHERS name and that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s marks in a domain name or otherwise. The cases papers do not contain any information which might evidence on the legitimate fair use of the domain names by the Respondent. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. 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.

Determined: Finding for Complainant

The fact that the disputed domain name does not resolve to an active webpage does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3). The disputed domain name comprises of the whole of the Complainant's mark. The Respondent did not deny knowledge of the Complainant's mark especially given the Complainant's worldwide reputation. The Panel finds that the Respondent's registration and passive holding of the disputed domain name in the circumstances of the present proceeding accounts to registration and use of the disputed domain name in bad faith.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

skechers.app

Ms. Kateryna Oliinyk
Examiner
Dated: June 8, 2018

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