Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. WhoisGuard Protected / WhoisGuard, Inc.
Claim Number: FA1905001845932
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 WhoisGuard Protected / WhoisGuard, Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers.us.com> registered with 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 Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant participated in the mandatory CentralNic Mediation on May 17, 2019 and the mediation process was terminated on May 27, 2019. See Compl. Annex. 1.
Complainant submitted a Complaint to the Forum electronically on May 31, 2019; the Forum received payment on May 31, 2019.
On June 3, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <skechers.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On June 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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.us.com. Also on June 7, 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 July 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 to the CDRP 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 CDRP Policy, CDRP 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
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.”
There are two Complainants in this matter: 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. 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 here accepts the evidence in the Complaint as sufficient to establish a sufficient nexus or link between the Complainants and treats them as a single entity in this proceeding.
A. Complainant
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 mark 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.us.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds a sub-domain “.us.com.”
Respondent lacks rights and legitimate interest in the <skechers.us.com> domain name as Respondent is not commonly known by the disputed domain nor is Respondent an authorized retailer or distributor of Complainant’s products.
Respondent registered and uses the <skechers.us.com> domain name in bad faith because Respondent is attempting to pass itself off as Complainant to sell counterfeit products. Further, Respondent attracts Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. Respondent had actual knowledge of Complainant’s mark due to the uniqueness of the mark and Respondent’s attempts to trade off the fame of the SKECHERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (Complainant”), of Manhattan Beach, CA, USA. Complainant is the owner of domestic and international registrations for the mark SKECHERS, which it has continuously used since at least as early as 1994, in connection with its provision of lifestyle and performance footwear.
Respondent is WhoisGuard Protected / WhoisGuard, Inc. (“Respondent”) of Panama. Respondent’s registrar’s address is not listed. The Panel notes Respondent registered the <skechers.us.com> domain name on or about March 16, 2018.
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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
Complainant asserts rights in the SKECHERS mark based on its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in the mark. 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.”). Complainant provides the Panel a copy of its registration with the USPTO (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). The Panel here finds that Complainant has established rights in the SKECHERS mark.
Next, Complainant argues Respondent’s <skechers.us.com> domain name is confusingly similar to Complainant’s mark as it merely adds a sub-domain to Complainant’s fully incorporated mark. Similar changes have been found to be insufficient to distinguish a disputed domain name from a complainant’s mark. See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). Here, Complainant argues that Respondent incorporates its mark in its entirety merely adding a “.us.com.” The Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <skechers.us.com> domain name because Respondent is not authorized or permitted to use Complainant’s SKECHERS mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel here notes that the WHOIS of record identifies the Respondent as “WhoisGuard Protected / WhoisGuard, Inc.” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the <skechers.us.com> domain name under Policy ¶ 4(c)(ii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent purports to sell Complainant’s products through its use of the <skechers.us.com> domain name. Using a disputed domain name for the purpose of selling counterfeit products may evince bad faith under Policy ¶ 4(b)(iv). See 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). Complainant provides screenshots of the resolving websites which feature the SKECHERS mark and purport to sell Complainant’s products. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues Respondent registered the <skechers.us.com> domain name with actual and constructive notice of Complainant’s rights in the mark. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark 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.”). Passing off as a complainant can demonstrate a respondent’s actual knowledge of a complainant’s rights in the mark at the time of registration. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark based on Respondent’s display of the SKECHERS mark and counterfeit products on the resolving webpage. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration, indicating bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the CDRP Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers.us.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 16, 2019
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