Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Doris Callaway
Claim Number: FA2002001882524
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. Respondent is Doris Callaway (“Respondent”), Wisconsin, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersdublin.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 February 7, 2020; the Forum received payment on February 7, 2020.
On February 10, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersdublin.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 February 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 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@skechersdublin.com. Also on February 10, 2020, 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.
As no Response was received from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the SKECHERS mark acquired through its portfolio of trademark registrations described below and the goodwill in the mark established by its prominent and extensive use by Complainant on its footwear and apparel products and related services for over 25 years. Complainant asserts its products are now sold in more than 170 countries and territories around the world through its own retail outlets, department stores, specialty stores, athletic specialty shoe stores, independent retailers, internet retailers worldwide and through Complainant’s website at <www.skechers.com>.
Complainant submits that the disputed domain name <skechersdublin.com> domain name is confusingly similar to its SKECHERS mark because the domain name includes the SKECHERS mark in its entirety, adding the geographical place name “Dublin”, and the generic top-level domain (gTLD) <.com> extension. Complainant argues that neither the addition of the geographic term nor the addition of the gTLD extension to Complainant's SKECHERS mark removes the disputed domain from the realm of confusing similarity. See, Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 20014) ("…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.").
Complainant further asserts that upon information and belief, Respondent is not a licensee, authorized retailer, or distributor of Complainant's products, nor is Respondent otherwise authorized to use the name or the SKECHERS trademark for any purpose.
Complainant submits that Respondent registered and is using the disputed domain name in bad faith.
Complainant argues that the SKECHERS mark is an arbitrary term which has no meaning outside its use as a trademark and service mark and that the very nature of Respondent's registration of the <skechersdublin.com> domain name evidences bad faith. Complainant submits that the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term on her own. This factor alone weighs in favor of finding bad faith against Respondent. 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).
The fact that Respondent chose to register an exact reproduction of Complainant's SKECHERS mark in the <.com> gTLD and is using the website to which it resolves to sell SKECHERS branded shoes indicates that Respondent had knowledge of Complainant and Complainant's business when the disputed domain name was registered. Complainant further submits Respondent had at least constructive knowledge of Complainant's rights in its mark at the time the domain was registered.
Complainant refers to print-out of the website to which the disputed domain name resolves which is annexed to the Complaint and submits that the content of Respondent’s website illustrates that Respondent is using the SKECHERS trademark on its website to sell suspected counterfeit SKECHERS branded products that compete directly with Complainant's business. As a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondent's website are Complainant’s genuine products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a producer of footwear and apparel and provider of related retail services. Complainant is the owner of a large portfolio of registrations for the SKECHERS mark in jurisdictions across the world including United States registered trademark SKECHERS, registration number 1851977 registered on August 30, 1994 for goods in international class 25.
Complainant has an established presence and reputation on the Internet and maintains its website at <www.skechers.com>.
The disputed domain name was registered on October 20, 2019 and resolves to a website which purports to offer footwear and apparel bearing the SKECHERS mark. Complainant has made an unanswered allegation that the products offered on Respondent’s website may be counterfeit goods.
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 request for verification of the registration details of the disputed domain name in the course of this proceeding.
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 adduced uncontested evidence of its rights in the SKECHERS trademark though its abovementioned portfolio of registered trademarks in jurisdictions across the world including a federal registration in the United States where Respondent is established.
The disputed domain name consists of Complainant’s SKECHERS mark in its entirety in combination with the geographical place name “Dublin” and the gTLD <.com> extension. Complainant’s trademark is the initial, dominant and only distinctive element in the disputed domain name. This Panel accepts Complainant’s submission that neither the addition of the geographic term nor the addition of the gTLD <.com> extension to Complainant's SKECHERS mark removes the disputed domain from the realm of confusing similarity.
Having compared both, this Panel finds that the disputed domain name is confusingly similar to the SKECHERS mark in which Complainant has rights.
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 the disputed domain name <skechersdublin.com>, arguing that Respondent registered the disputed domain name on October 20, 2019, long after Complainant first used and registered the SKECHERS mark; that there is no evidence in the record to suggest that Respondent is commonly known by the <skechersdublin.com> domain name; 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 trademark for any purpose.
Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 has provided accepted guidance to panelists as to whether a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that the respondent must actually be offering the goods or services at issue; must use the site to sell only the trademarked goods; the site must accurately disclose the registrant's relationship with the trademark owner and the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this proceeding, an examination of the website to which the disputed domain name resolves purports to offer SKECHERS branded goods, but it also prominently displays Complainant’s mark without license or authority, misrepresents itself as being Complainant’s website or has a connection with or is endorsed by Complainant and therefore it does not accurately disclose Respondent’s relationship with Complainant. Additionally, Respondent has not responded to Complainant’s allegations. Respondent therefore could not avail of a defense based on the Oki Data principles.
In such circumstances it is well established that the burden of production shifts to Respondent to prove her rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities 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).
Complainant’s unique SKECHERS trademark, which is a coined term with no meaning other than to designate the source of Complainant’s goods and services, is the dominant and only distinctive element of the disputed domain name. Furthermore, the disputed domain name is being used as the address of a website that purports to offer Complainant’s SKECHERS branded produce for sale. In the absence of any explanation from Respondent, this Panel must therefore find that the disputed domain name was registered with Complainant’s mark in mind and resolves to a website which misleadingly creates the impression that it is owned, authorized by or endorsed by Complainant.
This Panel finds that on the evidence adduced, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of her web site and the products purported to be offered on her website.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. In making this finding this Panel is conscious that Respondent has not filed any Response in this proceeding. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersdublin.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________
James Bridgeman SC
Panelist
Dated: March 5, 2020
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