Skechers U.S.A., Inc. II v. Benjamin Dunn
Claim Number: FA1901001827684
Complainant: Skechers U.S.A., Inc. II of Manhattan Beach, California, United States of America.
Complainant Representative: KLEINBERG & LERNER, LLP of Los Angeles, California, United States of America.
Respondent: Benjamin Dunn of taiwan, Beijing, US.
Respondent Representative: None
REGISTRIES and REGISTRARS
Registries: .TOP Registry
Registrars: 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 conflict of interests in serving as Examiner in this proceeding.
Terry F. Peppard, as Examiner.
Complaint submitted: January 30, 2019
Commencement: February 1, 2019
Default Date: February 18, 2019
Upon review of 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") for the giving of notice to Respondent of the commencement of this proceeding and affording to Respondent an opportunity to respond to and defend against the allegations of the Complaint filed herein.
Complainant requests that the domain name <saleskechers.top> be suspended for the life of its registration.
Clear and convincing evidence.
URS Procedure 1.2.6. requires that, in order to obtain a determination that a domain name should be suspended, Complainant must make out a prima facie case, proven by clear and convincing evidence, for each of the following issues:
1. The registered domain name is identical or confusingly similar to a mark for which Complainant holds a valid national or regional registration and that it is in current use;
2. Registrant has no right to or legitimate interest in the domain name; and
3. The same domain name was registered and is being used by
Respondent in bad faith.
Confusing Similarity of the Domain Name
In its Complaint, Complainant shows that it holds a valid registration for the
SKECHERS trademark, which is on file with the United States Patent and Trademark Office as Registry No. 1,851,977, registered August 30, 1994, in International Class 25 [clothing, footwear and headgear], renewed as of February 14, 2014, and that the mark is in current use. Complainant also shows that Respondent registered the domain name <saleskechers.top> on November 15, 2018. Respondent does not dispute any of this.
Turning to the substance of Complainant’s claim, the <saleskechers.top> domain name contains the SKECHERS mark in its entirety, with only the addition of the generic term “sale,” plus the generic Top Level Domain “.top”. Because every domain name requires a gTLD, the “.top” suffix is of no consequence to our analysis. And, because the term “sale” does no more than to describe an aspect of Complainant’s business, the addition of that term to the mark in forming the domain name is evidence that the domain name is, and is intended to be, confusingly similar to Complainant’s mark. Accordingly, we so find.
Registrant’s Rights or Interests
Complainant alleges, and Respondent does not deny, that Respondent must have known of Complainant and its rights in the SKECHERS mark when it registered the <saleskechers.top> domain name. Complainant also asserts, without objection from Respondent, that Complainant has not authorized Respondent to use its SKECHERS mark, whether in a domain name or otherwise. There is nothing in the record to suggest that Respondent has any affiliation with Complainant, and there is likewise nothing in the record to indicate that Respondent has ever been commonly known by the <saleskechers.top> domain name. On these undenied facts, we find that Respondent has neither any rights to nor any legitimate interests in the domain name.
Registrant’s Bad Faith
Under the URS Procedure, essentially the same considerations that establish that Respondent has no rights to or legitimate interests in the <saleskechers.top> domain name are also pertinent to an analysis of whether the domain name has been registered and is being used in bad faith. See URS Procedure ¶ 5.7. Accordingly, a finding of bad faith in the registration and use of the domain name follows directly from the discussion above of the absence of any rights or legitimate interests accruing to the benefit of Respondent from the uncontested facts presented in the Complaint filed in this proceeding. In addition, however, the Complaint details further facts showing that the website resolving from the contested domain name prominently displays both Complainant’s SKECHERS mark and photographs of items purporting to be Complainant’s branded products whereas they are likely counterfeit. In sum, the Complaint shows an attempt by Respondent to use a domain name that is confusingly similar to Complainant’s mark fraudulently to profit from the confusion thus caused among unsuspecting Internet users. For these reasons, we find that Respondent has both registered and now uses the challenged domain name in bad faith.
We find from a review of the record that the Complaint was not brought in an abuse of this proceeding and that it contains no material falsehoods.
Upon review of Complainant’s submissions, we find that Complainant has proven all three elements of the URS by clear and convincing evidence. We therefore Order that the <saleskechers.top> domain name be SUSPENDED for the duration of its registration.
Terry F. Peppard, Examiner
Dated: February 19, 2019
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