Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Michael Adams
Claim Number: FA1908001860290
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 Michael Adams (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skecherssingaporesg.com>, registered with 1API GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2019; the Forum received payment on August 30, 2019.
On September 4, 2019, 1API GmbH confirmed by e-mail to the Forum that the <skecherssingaporesg.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 September 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@skecherssingaporesg.com. Also on September 6, 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 September 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
There are two Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Skechers U.S.A., Inc. II is a wholly-owned subsidiary of Skechers U.S.A., Inc. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006). Based upon the evidence in the record, the Panel finds that there is a sufficient relationship between both parties, such that in accordance with the Rule 1(e), they may proceed as one party in this proceeding and they will be collectively referred to as “Complainant.”
A. Complainant
1. Complainant has been in the footwear and apparel and related retail service industry since 1993. Complainant has rights in the SKECHERS mark through 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 <skecherssingaporesg.com>[i] domain name is identical or confusingly similar to Complainant’s mark as it includes the SKECHERS mark in its entirety, adding the country name “Singapore” and the country code “sg” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent lacks rights or legitimate interests in the <skecherssingaporesg.com> domain name. Respondent is not commonly known by the domain name and Respondent is not a licensee or authorized to use Complainant’s mark.
3. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent prominently displays the SKECHERS mark along with suspected counterfeit versions of Complainant’s products offered for sale.
4. Respondent registered and uses the <skecherssingaporesg.com> domain name in bad faith. Respondent’s <skecherssingaporesg.com> domain name contains an exact reproduction of the well-known SKECHERS mark to capitalize on consumer recognition of the SKECHERS mark.
5. Additionally, based on the longstanding use of the SKECHERS mark and Respondent’s reproduction of the SKECHERS mark in the gTLD, Respondent must have had actual and constructive knowledge of Complainant’s rights in the mark at the time of registration of the <skecherssingaporesg.com> domain name. Because the SKECHERS mark is distinctive and unique, it is unlikely that Respondent devised the term on its own.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKECHERS mark. Respondent’s domain name is confusingly similar to Complainant’s SKECHERS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skecherssingaporesg.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 has rights in the SKECHERS mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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 copies of its registration of the SKECHERS mark with the USPTO (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). Accordingly, Complainant has established rights in the SKECHERS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <skecherssingaporesg.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the SKECHERS mark in its entirety, adding the country name “Singapore”, the country code “sg” and the gTLD “.com.” The addition of a geographic indicator and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The Panel holds that the <skecherssingaporesg.com> domain name is confusingly similar to the SKECHERS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <skecherssingaporesg.com>domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <skecherssingaporesg.com> domain name because Respondent is not commonly known by the domain name and Respondent is not a licensee or authorized to use Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by a 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 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 indicate that the respondent is not commonly known by a 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 <skecherssingaporesg.com> domain name lists the registrant as “Michael Adams” and there is no other evidence to suggest that Respondent was authorized to use the SKECHERS mark. Therefore, the Panel holds Respondent is not commonly known by the <skecherssingaporesg.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the <skecherssingaporesg.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent prominently displays the SKECHERS mark along with suspected counterfeit versions of Complainant’s products offered for sale. Passing off as a complainant by displaying a complainant’s mark and selling counterfeit or competing goods is not be a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the resolving webpage of the <skecherssingaporesg.com> domain name which shows the SKECHERS mark and offers for sale suspected counterfeit versions of Complainant’s products. The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <skecherssingaporesg.com> domain name in bad faith because Respondent registered the <skecherssingaporesg.com> domain name containing an exact reproduction of Complainant’s well-known mark to capitalize on the consumer recognition of the SKECHERS mark. A domain name incorporating the mark of another which creates a likelihood of confusion for commercial gain, shows bad faith registration and use under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that Respondent attempts to capitalize on consumer confusion by incorporating the exact SKECHERS mark into the domain name. The Panel agrees and holds that Respondent registered and uses the <skecherssingaporesg.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that based on the longstanding use of the SKECHERS mark and Respondent’s reproduction of the SKECHERS mark in the gTLD, Respondent must have had actual knowledge of Complainant’s rights in the mark at the time of registration of the <skecherssingaporesg.com> domain name. Actual knowledge of Complainant’s mark prior to registering the domain name 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.”); Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and thus constitutes bad faith per Policy ¶ 4(a)(iii).”). Complainant argues that the fact that Respondent registered an exact reproduction of Complainant’s SKECHERS mark in the <skecherssingaporesg.com> domain name indicates that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark at the time of registration of the domain name. The Panel agrees and holds that Respondent registered the <skecherssingaporesg.com> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skecherssingaporesg.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 8, 2019
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