Skechers U.S.A., Inc. II v. Bendo Helidon et al.
Claim Number: FA1904001837930
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: Bendo Helidon of Tirane, International, Albania.
Respondent Representative: None
REGISTRY and REGISTRAR
Registry: NeuStar
Registrar: NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Douglas M. Isenberg, as Examiner.
According to information provided to the Examiner by the Forum, the procedural history of this proceeding is as follows:
Complainant submitted: April 9, 2019
Commencement: April 10, 2019
Default Date: April 25, 2019
Having reviewed the communications records, the Examiner believes that the Forum has discharged its responsibility under the usTLD Dispute Resolution Policy (“Policy) and the Rules for the usTLD Dispute Resolution Policy (the “Rules”).
According to information provided to the Examiner by the Forum, Complainant requests that the domain name be suspended for the life of the registration.
In its Complaint, Complainant states the following:
“Complainant Skechers U.S.A., Inc. is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc and the two entities are in privity with each other. Complainant's footwear products are sold in over 170 countries and territories around the world.
“The SKECHERS trademark has been registered in numerous jurisdictions worldwide including in the U.S. (Reg. No. 1851977) in International Class 25 for footwear. In addition, the SKECHERS trademark is duly registered with the Trademark Clearing House.
“Respondent obtained registration of the domain skechersshoesoutlet.us. Respondent's domain registration includes, and is identical to, the SKECHERS trademark together with the generic terms "shoes" and “outlet” and the toplevel domain .us. By registering in the .us TLD, Respondent creates an illusion that the website is trustworthy.
“Respondent obtained registration of the skechersshoesoutlet.us domain in bad faith. There is no evidence that Respondent holds any legitimate interest in the trademark SKECHERS. Respondent is not licensed or authorized by Complainant to use the SKECHERS trademark. Respondent's website prominently displays the SKECHERS trademark along with photographs of unauthorized and potentially counterfeit Skechers branded products. Respondent registered the domain name, appropriating Complainant's famous SKECHERS trademark in order to suggest to Internet users that there is a connection between Complainant's products and the Respondent's domain. Respondent is using the SKECHERS trademark on its website to sell unauthorized and potentially counterfeit Skechers products that compete directly with Complainant's business. As a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondent's website are genuine Skechers products. Furthermore, by using the skechersshoesoutlet.us domain along with photographs of unauthorized and potentially counterfeit Skechers products. Respondent is attempting to profit or is profiting 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 Respondent's website.
“As the SKECHERS trademark has been submitted to and verified by Trademark Clearing House, Respondent must have received a warning from Trademark Clearing House indicating that the SKECHERS trademark belongs to the Complainant. Despite this warning, Respondent chose to continue with the registration of skechersshoesoutlet.us in violation of Complainant's rights. Complainant contends that Respondent's registration of a domain name that is identical to Complainant's registered trademark creates a likelihood of confusion with Complainant's SKECHERS house mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
“Based on the foregoing, Complainant respectfully requests that the skechersshoesoutlet.us domain be suspended.”
The Respondent did not submit a response.
Paragraph 4(a)(i) of the Policy requires that a Complainant prove that the “domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.” Based on Complainant’s submissions, it is apparent that Complainant has rights in the SKECHERS trademark. Further, the Examiner finds that the disputed domain name is confusingly similar to this trademark because it contains the trademark in its entirety, and the addition of the words “shoes” and “outlet” (which are associated with the trademark) does nothing to eliminate any confusing similarity.
Paragraph 4(a)(ii) of the Policy requires that a Complainant prove that the Respondent “ha[s] no rights or legitimate interests in respect of the domain name.” Based on the Complainant’s submissions, which have not been disputed by Registrant, the Examiner finds that Registrant has no rights or legitimate interests in respect of the domain name.
Paragraph 4(a)(iii) of the Policy requires that a Complainant prove that the “domain name has been registered in bad faith or is being used in bad faith.” Paragraph 4(b)(iv) of the Policy states that the following is one way by which a Complainant can demonstrate bad faith: “By using the domain name, [Respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’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 [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” Here, by allegedly “using the SKECHERS trademark on its website to sell unauthorized and potentially counterfeit Skechers products that compete directly with Complainant's business” (an allegation that Registrant has not disputed), Registrant has acted in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the Policy; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration: <skechersshoesoutlet.us>
Douglas M. Isenberg, Examiner
Dated: April 30, 2019
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