Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Lewis Wilson
Claim Number: FA1912001875784
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 Lewis Wilson (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skecherssg.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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 December 18, 2019; the Forum received payment on December 18, 2019.
On December 19, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <skecherssg.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 December 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2020 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@skecherssg.com. Also on December 20, 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 January 14, 2020 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. Complainants
Complainants submit that they have a multi-billion-dollar business in the global footwear industry. Their products are sold in more than 170 countries and territories around the world in 3,000 Skechers retail stores and online through the website at <www.skechers.com>.
Complainants argue that the disputed <skecherssg.com> domain name is confusingly similar to Complainants’ SKECHERS mark because the domain includes the SKECHERS mark in its entirety, adding the Singapore country code "sg" and the generic top-level domain (gTLD) ".com."
Complainants further submit that Respondent has no rights or legitimate interests in respect of the disputed domain name <skecherssg.com> arguing that the disputed domain name was registered on September 27, 2019, long after Complainants registered and began using the SKECHERS mark in 1994.
Furthermore, Complainants assert that Respondent is not commonly known by the disputed domain name. The public WHOIS information does not disclose the identity of Respondent and there is no other evidence in the record to suggest that the Respondent was commonly known by the <skecherssg.com> domain name. 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).
Furthermore, Complainants assert that Respondent is not a licensee, authorized retailer, or distributor of Complainant's products or otherwise authorized to use the name or the SKECHERS trademark for any purpose.
Complainants have taken enforcement steps against the disputed domain name and Respondent’s website is now inactive. Complainants have annexed to the Complaint screenshots of Respondent's website when it was active, which prominently displayed the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products.
Complainants submit that the disputed domain name was knowingly registered in bad faith to capitalize on consumer recognition of the SKECHERS mark and is using the website to which the disputed domain name resolves to sell SKECHERS branded shoes indicates that Respondent had knowledge of Complainant and Complainant's business.
Complainants point out that their SKECHERS trademark was registered in 1994, well before Respondent's registration of the disputed 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, Complainants submit that the designation SKECHERS is a unique and arbitrary term which has no meaning other than to identify Complainants and the source of their products. See Neuberger Berman, Inc., 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); cf. Bigstar Entm't, Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185 (S.D.N.Y. 2000) ("…the more unique and inherently distinctive the marks, the stronger it is, and the greater the likelihood that the public may confuse a similar mark").
B. Respondent
Respondent failed to submit a Response in this proceeding.
The first named Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of the second named Complainant Skechers U.S.A., Inc. and are proprietors of an international business designing, developing, and marketing footwear and apparel products. The first named Complainant is the owner of an international portfolio of registered trademarks including United States registered trademark SKECHERS, registration number 1,851,977, registered on August 30, 1994 for goods in international class 25.
Complainants have an established international presence and maintain their official website at <https://www.skechers.com>.
The disputed domain name was registered on September 27, 2019 and resolves to a website that is now inactive, but previously purported to offer Complainants’ products for sale with web-content that presented photographs, and graphics which were taken from Complainant’s official website without authorization.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the Forum’s enquiry.
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”).
Complainants have provided convincing uncontested evidence of their rights in the SKECHERS trademark.
This Panel finds that the disputed domain name is confusingly similar to Complainants’ SKECHERS mark as the <skecherssg.com> domain name incorporates the SKECHERS mark in its entirety. The disputed domain name consists of Complainants’ SKECHERS mark in its entirety in combination with two letters “sg” and the generic top-level domain <.com> domain extension.
Complainants’ trademark is the first and dominant element of the disputed domain name. In the context of a domain name, the two letters “sg” are likely to be confused with the Singapore ccTLD country code extension <.sg> and therefore lack distinctive character; and the gTLD <.com> extension of the disputed domain name may be ignored in the circumstances of the present Complaint.
Complainants have therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Complainants have made out a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name <skecherssg.com> arguing that the disputed domain name was registered on September 27, 2019, long after Complainants first acquired rights in the SKECHERS mark in 1994; that there is no evidence that Respondent is commonly known by the disputed domain name; that Respondent is not a licensee, authorized retailer, or distributor of Complainant's products or otherwise authorized to use the name or the SKECHERS trademark for any purpose.
In such circumstances the burden of production shifts to Respondent to establish such rights or legitimate interests. No Response has been filed and therefore Respondent has failed to discharge the burden of production. This Panel must therefore find that on the balance of probabilities Respondent has no rights or legitimate interests sin the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It is improbable that the registrant of the disputed domain name was unaware of Complainants and the SKECHERS mark when the disputed domain name was chosen and registered. The SKECHERS is a unique and arbitrary term which has no meaning other than to identify Complainants and the source of their products. The addition of the letters “sg” was likely chosen to create an impression of a connection with Singapore and the disputed domain name was used as an address for a website which purported to sell Complainants’ products. In these circumstances, this Panel finds on the balance of probabilities that the disputed domain name was registered din bad faith in order to take predatory advantage of Complainants’ name, brand, reputation and trademark.
The website to which the disputed domain name resolves is presently inactive but has previously contained content offering for sale products purporting to be those of Complainants and which prominently displayed the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products. The website content did not contain any statement or explanation as to the relationship between Respondent and Complainants and in fact created the impression that it was owned by or in some way associated with Complainants.
This Panel finds therefore that on the balance of probabilities by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the products offered for sale on it.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainants have therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and are entitled to succeed in their application that the domain name registration be transferred to the first named Complainant Skechers U.S.A., Inc. II.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skecherssg.com> domain name be TRANSFERRED from Respondent to transferred to Complainant Skechers U.S.A., Inc. II.
________________________
James Bridgeman SC
Panelist
Dated: January 15, 2020
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