Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Kayleigh Herbert
Claim Number: FA1811001815213
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 Kayleigh Herbert (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saleskechers.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2018; the Forum received payment on November 6, 2018.
On November 7, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <saleskechers.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@saleskechers.com. Also on November 7, 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 November 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
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 United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994). Respondent’s <saleskechers.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “sale” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have any rights or legitimate interests in the <saleskechers.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 name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <saleskechers.com> domain name to sell counterfeit products.
Respondent has registered and is using the 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 disputed domain names. Finally, Respondent must have had actual and/or constructive knowledge of Complainant’s SKECHERS mark prior to registering the <saleskechers.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <saleskechers.com> 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 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 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.”).
Preliminary Issue: Multiple Complainants
The two Complainants in this matter are: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainant claims that both Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II own numerous trademark registrations with United States Patent and Trademark Office and that it uses the marks in connection with the footwear goods and related retail services.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119, (Forum May 12, 2006), the panel stated:
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 Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
Complainant claims rights to the SKECHERS mark based upon registration with the USPTO. Registration with the 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) The Panel finds that Complainant has rights in the SKECHERS mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <saleskechers.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 generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); 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). Complainant argues Respondent merely adds the term “sale” and a “.com” gTLD to Complainant’s SKECHERS mark. The Panel agrees with Complainant and finds that the <saleskechers.com> domain name is confusingly similar to Complainant’s SKECHERS mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <saleskechers.com> domain name as Respondent is not authorized to use Complainant’s SKECHERS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that respondent is not commonly known by the disputed 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 evidence in the record to indicate respondent has been authorized to register a domain name using complainant’s mark supports a finding that respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii). 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 Registrar identifies the registrant of the disputed domain name as “Kayleigh Herbert” and nothing of the record indicates Respondent is authorized by Complainant to use the SKECHERS mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent fails to make a bona fide offering of goods and services or legitimate noncommercial or fair use. Specifically, Complainant argues Respondent uses the <saleskechers.com> domain name to sell counterfeit products. Sale of counterfeit products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). 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.”). Here, Complainant contends Respondent's website prominently displays the SKECHERS trademark along with photographs of Complainant’s footwear and related products. The Panel agrees with Complainant that this use does not amount to a bona fide offering of good and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). The Panel finds Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and is using the <saleskechers.com> domain name in bad faith by disrupting Complainant’s business and diverting users to 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 may evince 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.) Here, Complainant contends that Respondent is using Complainant’s SKECHERS mark on its webpage to sell counterfeit products. Furthermore, by using the <saleskechers.com> domain along with photographs of Complainant’s counterfeit products, Respondent attempts to profit by creating a likelihood of confusion with the Complainant’s 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. The Panel finds that Respondent attempts to disrupt Complainant’s business and commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues that Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s mark. Constructive notice of a complainant’s mark is insufficient for a finding of bad faith, 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, and 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. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark prior to registering and using the <saleskechers.com> domain name and registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <saleskechers.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 5, 2018
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