Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Kelsey Johnson
Claim Number: FA1911001871386
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, United States of America. Respondent is Kelsey Johnson (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gowalkbrasil.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2019; the Forum received payment on November 14, 2019.
On November 15, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <gowalkbrasil.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 November 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@gowalkbrasil.com. Also on November 18, 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 December 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 submits that it is engaged in the business of designing, developing, and marketing footwear and apparel products and relies on rights in the SKECHERS GO WALK and GO WALK marks acquired through its portfolio of registered trademarks more particularly described below and at common law through its extensive use of the marks in business. Complainant submits that it has a multi-billion-dollar global business and its footwear products are sold in more than 170 countries and territories around the world in over 3,300 Skechers retail stores and online through its website at <www.skechers.com>.
Complainant's products are also available through department stores, specialty stores, athletic specialty shoe stores, independent retailers, and internet retailers worldwide.
Complainant submits that the disputed <gowalkbrasil.com> is confusingly similar to Complainant’s GO WALK mark because the domain includes the GO WALK mark in its entirety, adding the country name "brasil", and the generic top-level domain (gTLD) <.com> extension.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <gowalkbrasil.com> arguing that Respondent registered the <gowalkbrasil.com> domain name on June 26, 2019, long after Complainant registered and began using its SKECHERS GO WALK and GO WALK marks.
Complainant submits that Respondent is not a licensee, authorized retailer, or distributor of Complainant's products, nor is Respondent otherwise authorized to use the Skechers name or the SKECHERS GO WALK and GO WALK trademarks for any purpose.
Complainant further submits that upon information and belief, Respondent is not commonly known by the disputed domain name. The WHOIS information lists "Kelsey Johnson" as the registrant and there is no other evidence in the record to suggest that Respondent was commonly known by the disputed domain name <gowalkbrasil.com>. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that Respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a/ Electromatic Equip't" as the registrant and no other evidence in the record suggests that Respondent was commonly known by the domain names in dispute).
Complainant submits that Respondent's website prominently displays the SKECHERS and GO WALK trademarks along with photographs of suspected counterfeit SKECHERS GO WALK-branded products and argues that Respondent knowingly registered the disputed domain name containing an exact reproduction of the well-known GO WALK mark to capitalize on consumer recognition of the SKECHERS GO WALK and GO WALK marks.
Complainant argues that the fact that Respondent chose to register an exact reproduction of Complainant's GO WALK mark in the gTLD <.com> and is using the website to which the disputed domain name resolves to sell SKECHERS GO WALK and GO WALK branded footwear indicates that the registrant had knowledge of Complainant and Complainant's business when the disputed domain name was registered.
Complainant's SKECHERS GO WALK trademark was registered in 2012, well before Respondent's registration of the <gowalkbrasil.com> domain name in 2019. Complainant submits that therefore Respondent had at least constructive knowledge of Complainant's rights in its mark at the time the disputed domain name was registered.
Moreover, Complainant submits that the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term on its own and argues that this factor alone weighs in favor of finding bad faith against Respondent. See, Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323 (WIPO Nov. 2, 2000) (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith).
In conclusion, Complainant submits that the allegations of bad faith set out above, combined with the Respondent's lack of interest or rights in the disputed domain name, should lead the Panel to the inevitable conclusion that there is no plausible circumstance under which Respondent could legitimately register or use the disputed domain name. Therefore, the Panel should find that the disputed domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on an international sports footwear business and is the owner of a large international portfolio of registered trademarks including the following:
United States registered trademark SKECHERS GO WALK, registration number 4,169,278, registered on July 3, 2012 on the Principal Register for goods in international class 3;
China registered trademark GO WALK, registration number 15376137, registered on January 7, 2016 for goods in class 3.
Complainant carries on a global business with an established online reputation and maintains its main website at <www.skechers.com>.
The disputed domain name <gowalkbrasil.com> was registered on June 26, 2019 and resolves to a website which prominently display’s Complainant’s SKECHERS and SKECHERS GO WALK marks and purports to offer sports footwear bearing the SKECHERS mark at almost 50% below the recommended retail price. Complainant alleges that these are counterfeit products which has not been denied.
There is no information about the Respondent except for that provided in the Complaint, the WhoIs and the Registrar's response to the Forum’s enquiry for details of the registration of the disputed domain name.
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 proven to the satisfaction of this Panel that has rights in the SKECHERS GO WALK and GO WALK trademarks which it acquired through its abovementioned portfolio of registered trademarks and its extensive use of the mark has used in its global footwear business.
This Panel finds that the disputed domain name is confusingly similar to Complainant’s GO WALK mark because the domain includes the GO WALK mark in its entirety, adding the country name "brasil", and the <.com> gTLD extension.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the domain name <gowalkbrasil.com> arguing that Respondent registered the <gowalkbrasil.com> domain name on June 26, 2019, long after Complainant registered and began to use the SKECHERS GO WALK and GO WALK marks; that Respondent is not a licensee, authorized retailer, or distributor of Complainant's products; that Respondent is not otherwise authorized to use the Skechers name or the SKECHERS GO WALK and GO WALK trademarks for any purpose; and that Respondent is not commonly known by the disputed domain name.
Furthermore, Complainant alleges that Respondent's website prominently displays the SKECHERS and GO WALK trademarks along with photographs of suspected counterfeit SKECHERS GO WALK-branded products.
In such circumstances, the burden of production shifts to Respondent to establish that he has such right or legitimate interests in the disputed domain name.
Respondent has failed to discharge the burden of production and so this Panel finds on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
From the evidence adduced, it is clear that Respondent knowingly registered the disputed domain name containing an exact reproduction of the GO WALK mark in order to capitalize on and take predatory advantage of consumer recognition of the SKECHERS GO WALK and GO WALK marks.
The registrant's decision to choose and register an exact reproduction of Complainant's GO WALK mark in the gTLD <.com> and the Respondent's subsequent use of the website to which the disputed domain name resolves to sell SKECHERS branded footwear indicates that Respondent had knowledge of Complainant and Complainant's business.
Complainant's SKECHERS GO WALK trademark was registered in 2012, well before Respondent's registration of the <gowalkbrasil.com> domain name in 2019.
This Panel finds therefore that by using the disputed domain name, Respondent has 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 Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the products on the web site.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gowalkbrasil.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC
Panelist
Dated: December 11, 2019
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