Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Andreas Drescher
Claim Number: FA1907001854599
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 Andreas Drescher (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersdenmark.com>, registered with NameSilo, LLC.
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 submitted a Complaint to the Forum electronically on July 29, 2019; the Forum received payment on July 29, 2019.
On July 30, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersdenmark.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 July 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@skechersdenmark.com. Also, on July 31, 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 August 22, 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 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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 satisfactory to establish a sufficient nexus or link between the Complainants and treats them as a single entity (Complainant) in this proceeding.
A. Complainant
Complainant operates in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994). Respondent’s <skechersdenmark.com> domain name is identical or confusingly similar to Complainant’s SKECHERS mark because it wholly incorporates Complainant’s SKECHERS mark, and merely adds the geographic term “denmark” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <skechersdenmark.com> domain name. Respondent is not authorized or licensed to use Complainant’s SKECHERS mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name’s resolving webpage to feature the SKECHERS mark and sell counterfeit versions of Complainant’s goods.
Respondent registered and uses the <skechersdenmark.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s SKECHERS mark prior to registering the disputed domain name.
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 Andreas Drescher (“Respondent”), of Bobbau, Germany. Respondent’s registrar’s address is unlisted. The Panel notes that the disputed domain name was registered on or about April 28, 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”).
Complainant asserts rights in the SKECHERS mark based upon registration with the USPTO (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994). Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides registrations for its trademarks. The Panel here finds that Complainant has rights in the SKECHERS mark per Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <skechersdenmark.com> domain name is identical or confusingly similar to Complainant’s SKECHERS mark because it wholly incorporates Complainant’s SKECHERS mark, and merely adds the geographic term “denmark” and the “.com” gTLD. The addition of geographical terms and a gTLD to a complainant’s mark is generally insufficient to overcome confusing similarity between the disputed domain name and at-issue mark. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“we conclude from a review of the record that Respondent’s <mellosolar.com> domain name is substantively identical and confusingly similar to Complainant’s MELLO SOLAR mark.”). The Panel here finds that Respondent’s <skechersdenmark.com> domain name is identical or confusingly similar to Complainant’s SKECHERS mark.
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 has no rights or legitimate interests in the <skechersdenmark.com> domain name as Respondent is not authorized by Complainant to use the SKECHERS mark and there is no evidence to suggest Respondent is commonly known by the disputed domain name. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. 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 mark, 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 mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 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.”). Here Complainant provides WHOIS information for Respondent indicating that Respondent is known as “Andreas Drescher” and no information of record indicates that Respondent was authorized to use the Complainant’s SKECHERS mark. The Panel here finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the <skechersdenmark.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name’s resolving webpage to sell counterfeit versions of Complainant’s goods. Use of a disputed domain to sell competing or counterfeit goods is not considered to be a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage where Respondent offers counterfeit versions of Complainant’s products for sale. The Panel here finds Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant does not make any arguments that squarely fall under Policy ¶ 4(b) however, the Panel notes these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel may find Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
Finally, Complainant asserts that Respondent had actual and/or constructive knowledge of Complainant’s rights in the SKECHERS mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <skechersdenmark.com> domain name and Respondent’s use of the mark on the resolving webpage. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith 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.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, the Panel again notes that Complainant provides a screenshot of the disputed domain name’s resolving webpage where Respondent purportedly features the SKECHERS mark in connection to the sale of counterfeit versions of Complainant’s goods. The Panel here finds that Respondent had actual notice of Complainant’s rights in the SKECHERS mark 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 ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersdenmark.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 5, 2019
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