Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. VirgilBeene
Claim Number: FA1806001790638
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, United States of America. Respondent is VirgilBeene (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersoutlets.us.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Kenneth L. Port as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on June 27, 2018.
Complainant submitted a Complaint to the Forum electronically on June 7, 2018; the Forum received payment on June 7, 2018.
On June 29, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <skechersoutlets.us.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On July 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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.com. Also on July 3, 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 July 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 to the CDRP 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 CDRP Policy, CDRP 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. and Skechers U.S.A., Inc. II, is a global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark based upon the registration with the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994) See Compl. Annex. 3. Respondent’s <skechersoutlets.us.com> is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “outlets” along with the “.us” country code top-level domain (“ccTLD”) and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have any rights or legitimate interests <skechersoutlets.us.com> domain name. Respondent is not permitted or licensed to use Complainant’s SKECHERS mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain names for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <skechersoutlets.us.com> domain name to sell Complainant’s counterfeit products.
Respondent has registered or is using the domain names 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 disputed domain names. Finally, Respondent must have had actual and/or constructive knowledge of Complainant’s SKECHERS mark prior to registering the <skechersoutlets.us.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on April 19, 2017
The Panel finds that there are two Complainants in this matter, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II; however, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. As such, the Panel shall treat them all as a single entity in this proceeding.
The Panel also finds that the disputed domain name is confusingly similar with the Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP 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.”).
The Panel finds that the disputed domain name, <skechersoutlets.us.com>, is confusingly similar to Complainant’s trademark, SKECHERS. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the generic word “outlets” along with the “.us” country code top-level domain (“ccTLD”) and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent apparently uses the disputed domain name to sell Complainant’s counterfeit products.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent registered or is using the disputed domain name which sells counterfeit products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells counterfeit goods is evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). Here, Complainant contends that Respondent is using Complainant’s SKECHERS mark on its webpage to sell counterfeit products. Furthermore, by using the <skechersoutlets.us.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 web site and products offered through the disputed domain name’s resolving website. See Compl. Annex. 6. Therefore, the Panel finds that Respondent attempted to disrupt Complainant’s business and commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. 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 mark prior to registering the disputed domain name. See Compl. Annex. 6. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark prior to registering the <skechersoutlets.us.com> domain name.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <skechersoutlets.us.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: July 29, 2018
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