Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. kim seong su
Claim Number: FA1904001840242
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, California, USA. Respondent is kim seong su (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers.shop>, registered with Gabia, 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 Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2019; the Forum received payment on April 23, 2019.
On April 24, 2019, Gabia, Inc. confirmed by e-mail to the Forum that the <skechers.shop> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. 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 April 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@skechers.shop. Also on April 26, 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 May 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 states that Complainant is a global leader in the lifestyle and performance footwear industry with products sold in more than 170 countries and territories around the world and has over 3,000 Skechers retail stores worldwide. Complainant has rights in the SKECHERS trademark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). Respondent’s <skechers.shop> domain name is confusingly similar to Complainant’s trademark as it incorporates Complainant’s trademark in its entirety and merely adds the “.shop” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <skechers.shop> domain name as Respondent is not commonly known by the disputed domain nor is Respondent an authorized retailer or distributor of Complainant’s products. Further, Respondent is not authorized to use the name or SKECHERS trademark. Respondent fails to make a bona fide offering of goods or a legitimate noncommercial or fair use of the disputed domain name as the disputed domain name resolves to a parked webpage.
Respondent registered and uses the <skechers.shop> domain name in bad faith as Respondent disrupts Complainant’s business by diverting Internet users seeking Complainant’s business. Further, Respondent attracts Internet users for commercial gain by creating a likelihood of confusion with Complainant’s trademark. Finally, based on the fame of Complainant’s trademark, Respondent had constructive knowledge of Complainant’s rights in the trademark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 1,851,977 SKECHERS (word), registered August 30, 1994 for services in class 39.
Respondent registered the disputed domain name on April 14, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Multiple Complainants
The Panel notes that there are two complainants in this case: Skechers U.S.A., Inc. II and Skechers U.S.A., Inc. Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and both are in privity with each other.
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. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), “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”.
As the two Complainants’ in this case are in fact closely related, being part of the same company structure, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and the Panel will therefore treat them together as a single entity in this proceeding.
Preliminary Issue: Language of Proceeding
The Panel notes that Complainant fails to request that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant should have requested this in light of the Korean language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. UDRP Rule 10 (b) states that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The UDRP Rule 10 (c) states that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel has taken into consideration that the Respondent did not file a response, and thereby also failed to argue that the language of proceeding should be in Korean language. Although this is not enough alone to treat English as the language of proceeding, it is one indicator that Respondent accepts English.
The Panel further notes that English is used in South Korea, the country of the Respondent, as a second language. The Respondent’s registered address is in Daegu, the fourth largest city in South Korea, and a city well known for hosting international events as well as co-operate with other cities around the world – where for example Atlanta, USA is named as one of the official “Sister Cities” at the Daegu Metropolitan City’s official web site.
Finally, the disputed domain name is registered under the “.shop” gTLD, thereby using the English word “shop”, indicating that the disputed domain name was registered with a more international (English spoken) audience in mind.
The Panel has weighed the relative time and expense in enforcing the Korean language agreement, which would result in prejudice toward either party, together with the other referred facts and indications in the case.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant asserts rights in the SKECHERS trademark based on its registration with the USPTO (e.g., Reg. No. 1,851,977, registered August 30, 1994). Registration of a trademark with the USPTO is sufficient to establish a complainant’s rights in the trademark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that Complainant has established rights in the SKECHERS trademark.
Next, Complainant argues that Respondent’s <skechers.shop> domain name is confusingly similar to Complainant’s trademark as it merely adds the gTLD “.shop” to Complainant’s fully incorporated mark. The addition of a gTLD is insufficient to distinguish a disputed domain name from a complainant’s mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds Respondent’s disputed domain name is identical to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent lacks rights or legitimate interest in the <skechers.shop> domain name as Respondent is not commonly known by the disputed domain name, Respondent is not an authorized retailer of Complainant’s products, and Respondent is not authorized to use the name or SKECHERS trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the trademark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent does not have rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “kim seong su” and there is no other evidence to suggest that Respondent was authorized to use the SKECHERS trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <skechers.shop> domain name as the domain name resolves to a parked webpage and displays no information. An inactive webpage that fails to display content is generally not considered to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant has provided the Panel a screenshot of the resolving webpage of the disputed domain name which displays the error message “This site can’t be reached.”
The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disptued domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel therefore finds that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant argues that Respondent registered the <skechers.shop> domain name with actual and constructive notice of Complainant’s rights in the trademark. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of a complainant’s trademark prior to registration is adequate to support a finding of bad faith registration under Policy ¶ 4(a)(iii). 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.”). For its constructive notice argument, Complainant asserts that its registration of the trademark in 1994 is evidence that Respondent had constructive notice of Complainant’s rights in the trademark.
The Panel notes that, although the Complainant has not filed arguments referring to this, the Complainant has provided a list of Complainant’s trademark registrations for SKECHERS around the world (Annex 4 of the Complaint). On that list is SKECHERS noted as a registered trademark in “Korea”, in the name of the Complainant in 1993 and 1994.
Further, again not specifically referred to by the Complainant, but although provided as Annex 2 of the Complaint, there is a list of Complainant’s subsidiaries around the world – including Skechers Korea Co. Ltd. As both the trademark and the company reference are only listed, not supported by any formal documentation, the Panel cannot take these as evidence of Complainant’s local presence in South Korea.
However, the Panel notes the references, and - in the absence of any reply/comments from the Respondent – consider these as indications that the Complainant may well be known in South Korea, and further that the Respondent had actual and/or constructive knowledge of the Complainant’s prior rights at the time of registration of the disputed domain name.
Further, passive holding will not prevent from a finding of bad faith. Even if the disputed domain name is not actively used, the Panel notes that: (i) the Complainant’s trademark is indeed distinctive, and rather well-known, including in the country of the Respondent, (ii) the Respondent has failed to submit a response providing any arguments or evidence of actual or contemplated good-faith use, (iii) as the trademark is distinctive, and the disputed domain name is in fact the identical version of Complainant’s trademark, with the addition of the .shop gTLD – it is implausibility of any good faith use to which the domain name may be connected with. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc , WIPO D2017-0246 (April 10, 2017) “…the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the Domain Name is in bad faith. Such circumstances include the strength and renown of the Complainants’ DOC MARTENS trade mark, the Respondent’s failure to take part in the present proceedings and the use of false details to conceal the Respondent’s identity”.
The Panel finds that the domain name was registered and is being used in bad faith per Policy ¶ 4(b)(i), (ii), (iii), and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers.shop> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 3, 2019
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