Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Lofgrent Isaksson
Claim Number: FA1812001822803
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 Lofgrent Isaksson (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sneakers-skechers.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 27, 2018; the Forum received payment on December 27, 2018.
On January 9, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <sneakers-skechers.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 January 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2019 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@sneakers-skechers.com. Also on January 15, 2019, 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 February 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On February 7, 2019, the Panel issued a Procedural Order to the Complainants to show a sufficient link between two Complainants to allow multiple parties to proceed as one party pursuant to the Forum’s Supplemental Rule 1(e); and to specify the Complainant to whom the disputed domain name should be transferred in the remedy sought. On February 8, 2019, the Complainants submitted the Additional Submission in response to the Panel's Procedural Order, which was timely.
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 disputed domain name be transferred from Respondent to Complainant Skechers U.S.A., Inc. II.
There are two (2) Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainants claim that Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and are in privity with each other, by submitting a copy of the 2017 Skechers 10K report listing the subsidiaries of the registrant Skechers.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
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.
Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complainants' Additional Submission is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
A. Complainant
i) 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). See Amend. Compl. Annex. 2. The disputed domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “sneakers” followed by a hyphen, and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
ii) Respondent does not have any rights or legitimate interests in the disputed domain name. Respondent is not authorized 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 used the <sneakers-skechers.com> domain name to sell Complainant’s counterfeit products. Currently, Respondent fails to actively use of the disputed domain name.
iii) Respondent registered and uses the disputed 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 name. Finally, Respondent must have had actual and/or constructive knowledge of Complainant’s SKECHERS mark prior to registering the <sneakers-skechers.com> domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
C. Complainant's Additional Submissions
Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and are in privity with each other. Attached is a 2017 Skechers 10K report listing the subsidiaries of the registrant Skechers. The disputed domain name should be transferred to Skechers U.S.A., Inc. II.
1. The disputed domain name was registered on November 23, 2017.
2. Complainant has established rights in the SKECHERS mark based upon the registration with the USPTO (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994).
3. Respondent was using Complainant’s mark on its webpage to sell counterfeit products. The disputed domain resolving website displayed photographs of Complainant’s counterfeit products.
4. The disputed domain name resolves to an inactive website.
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.”).
Complainant claims rights to 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). Therefore, the Panel finds that Complainant has rights in the SKECHERS mark per Policy ¶ 4(a)(i).
Complainant next claims that the disputed 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 and/or descriptive terms, a hyphen 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant argues Respondent merely adds the term “sneakers”, a hyphen and the “.com” gTLD to Complainant’s SKECHERS mark. The Panel agrees with Complainant and finds that the disputed domain name does not contain changes that would sufficiently distinguish it from the Complainant's SKECHERS mark per Policy ¶ 4(a)(i).
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 <sneakers-skechers.com> domain name. Specifically Complainant argues Respondent is not licensed or authorized to use the SKECHERS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a 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 authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed 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 “Lofgrent Isaksson,” and there is no other evidence to suggest Respondent was authorized to use the SKECHERS mark. See Amend. Compl. Annex 4. The Panel therefore finds Respondent is not commonly known by the disputed 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 used the disputed domain name to sell counterfeit products until it sent a cease and desist letter after a customer complained to Complainant. 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 used to prominently display the SKECHERS trademark along with photographs of Complainant’s footwear and related products. See Amend. Compl. Annex. 5. The Panel agrees with Complainant that 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) or (iii).
Further, Complainant argues that currently, Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that 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) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Here, Complainant provides a screenshot of the disputed domain name which resolves to an inactive website which currently features an “inactive” notice. See Amend. Compl. Annex 5. The Panel agrees with Complainant that 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) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and is using the disputed 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 mark on its webpage to sell counterfeit products. Furthermore, by using the disputed domain 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 Amend. Compl. Annex. 5. The Panel also notes that the disputed domain name currently resolves to an inactive website. Id. 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 and/or constructive knowledge of Complainant’s mark. While 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, the fact that Respondent's website previously displayed the SKECHERS mark alongside counterfeit footwear products, Respondent must have been aware of Complainant and its SKECHERS prior to registering the disputed domain name. See Amend. Compl. Annex. 5. The Panel infers, due to the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant’s rights in the Complainant's mark prior to registering the disputed domain name, thereby supporting a finding of bad faith under 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 <sneakers-skechers.com> domain name be TRANSFERRED from Respondent to Complainant Skechers U.S.A., Inc. II.
Ho Hyun Nahm, Esq., Panelist
Dated: February 10, 2019
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